Zumiez Services Inc. v. JERMAINE WRICE
Claim Number: FA1409001580413
Complainant is Zumiez Services Inc. (“Complainant”), represented by John Crosetto of Garvey Schubert Barer, Washington, USA. Respondent is JERMAINE WRICE (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <apparelempyre.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 18, 2014; the National Arbitration Forum received payment on September 18, 2014.
On September 19, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <apparelempyre.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@apparelempyre.com. Also on September 24, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has used EMPYRE to identify its clothing and apparel products. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,418,244 registered Apr. 29, 2008). Complainant believes that the <apparelempyre.com> domain name is confusingly similar to the EMPYRE mark.
2. Respondent has no rights or legitimate interests in the domain name. Respondent is “Jermaine Wrice,” who is not commonly known by the <apparelempyre.com> domain name. Further, Respondent is selling competing products through the domain name’s website.
3. Respondent has registered and used the domain name in bad faith. The use of the <apparelempyre.com> domain name to promote a competing business is disruptive to the EMPYRE mark. Likewise, Respondent’s <apparelempyre.com> domain name is being used to sell counterfeit, or at least competing, goods that may create a likelihood of confusion among Internet users. Further, Respondent had actual notice of Complainant’s rights when registering and using this domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Zumiez Services Inc. of Lynwood, WA, USA. Complainant is the owner of a domestic registration for the mark EMPYRE which it has used continuously since at least as early 1999 in connection with its sales of specialty apparel inspired by skateboarding, snowboarding, surfing, motocross and BMX.
Respondent is Jermaine Wrice of Cuyahoga Falls, OH, USA. Respondent’s registrar’s address is listed as Kirkland WA, USA. Respondent registered the <apparelempyre.com> domain name on or about June 1, 2012.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses EMPYRE to identify its clothing and apparel products. The mark is registered with the USPTO (e.g., Reg. No. 3,418,244 registered Apr. 29, 2008). The Panel finds that the USPTO registration sufficiently satisfies the Policy ¶ 4(a)(i) required showing of rights in the EMPYRE mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant believes that the <apparelempyre.com> domain name is confusingly similar to the EMPYRE mark. The Panel notes the domain name combines the mark with the descriptive term “apparel” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Mead Johnson & Company, LLC v. Chau, FA 1497581 (Nat. Arb. Forum Jun. 18, 2013) (concluding that the addition of the generic term “coupons” and a gTLD did not remove the disputed domain name from the realm of confusing similarity).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Zumiez asserts that it began using and promoting the EMPYRE trademark for the sale of apparel more than two decades prior to Respondent's registration of the Disputed Domain. Zumiez further notes that it obtained a federal registration for EMPYRE for clothing and apparel four years prior to Respondent's registration of the Disputed Domain. Additionally, there is evidence that Respondent uses "EMPYRE" on the clothing sold on the Disputed Domain to mislead consumers by suggesting the goods are made or affiliated with Zumiez's. Complainant also points out that Respondent has been sued for advertising and selling counterfeit merchandise. infringement, and false designation of origin. Complainant contends that Respondent's choice to use Zumiez's EMPYRE trademark in the Disputed Domain, on the website, and on several articles of clothing, despite the fact that Respondent’s company's name is Apparel Empire, as well as the lawsuits against Respondent is strong evidence that the disputed domain name is designed to mislead consumers. The Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services pursuant to the Policy. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant contends that Respondent nor his company is commonly known by the name "EMPYRE." Respondent is an individual named Jermaine Wrice, whose company is registered in Ohio as "Apparel Empire LLC" and the Disputed Domain containing Zumiez's EMPYRE mark directs to a landing page for "Apparel Empire." Respondent's company is thus commonly known by the name Apparel Empire. Complainant asserts that it has not given Respondent any authorization to use its mark. The Panel finds that the Respondent is not commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims that the use of the <apparelempyre.com> domain name to promote a competing business is disruptive to the EMPYRE mark. The Panel notes evidence indicating the domain name resolves to a website promoting competing products. The Panel finds that operating a competing website, complete with offers for competing goods, is evidence of Policy ¶ 4(b)(iii) bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Further evidence appears to support the contention that Respondent’s <apparelempyre.com> domain name is being used to sell counterfeit goods that may create a likelihood of confusion among Internet users. The Panel finds that Respondent’s use of a confusingly similar domain name to make such sales is evidence of Respondent’s intent to capitalize on the likelihood of Internet user confusion under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <apparelempyre.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 30, 2014
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